About Technology Transfer

Technology transfer is the creation of value out of an academic innovation.
We protect your intellectual property (IP) and support you in different forms of bringing it to the market. We take care of the licensing process or support your start up business.
„A paper doesn't cure a patient"
We transfer innovations to the market so the public benefits from research funding. You personally benefit from participating on revenues generated when your idea creates value.
The outcomes usually are a license of your invention to a company or a startup company. The monetary value of these outcomes depends on the market value of your idea and also on your further contribution to the project. Especially in a stage where your idea is validated and brought to market maturity your impact is essential. Finally, you either participate on the earned royalties from a license or you may decide to run your own business and e.g. become a CEO.
Our aim is to maximize the social and economic impact of DKFZ's research.
– We are the team that supports the protection of your Intellectual Property (IP).
– We work together with the legal department when contracts are filed and IP regulations are negotiated.
– We evaluate your invention disclosure and support the process of filing a patent in collaboration with patent attorneys.
– We are connected to industries to market your invention.
– We support the funding and founding of your start up business.
Essential to the process is your invention. You bring in a discovery you have made and think it may have commercial potential – the invention disclosure. If your idea is new, innovative and we also see a reasonable market potential a patent will be filed. The next step is that we try to create monetary value out of the invention by licensing it or supporting your start up.
Whenever you have a question that might address technology transfer. The sooner the better!
We are dealing with basically all contracts in which intellectual property is negotiated. Per year we handle more than 300 Material or Data Transfer Agreements (M/DTAs), about 60 Collaboration Agreements and 30 Non-disclosure Agreements (NDAs), 10 licensing, agreements and 10 VIP+ Grants. Per year there is at least one start up supported.
The medium revenues the Tech Transfer Office generated over the last decade is about 1 Million p.a.
No. But there is a couple of trainings you can take to qualify you for the job. Based on an education in life sciences you can take courses e.g. in patent law, licensing and marketing.

Inventions

An invention is a technical solution to an existing problem that nobody else could solve by then.
An invention must be:
• new;
• based on an inventive activity and/or an inventive step; and
• commercially applicable; to be able to be protected as patent or utility patent.
Yes. According to the Arbeitnehmererfindergesetz all work results- including inventions- have to be disclosed to the employer.
The Employee Invention Act basically applies to all members of the DKFZ who are in an employment or employer-employee relationship with the DKFZ. Students only come within the scope of this Act if they are in an employer-employee relationship with the university, e.g. as research assistant.
The law distinguishes between employee inventions and free inventions. Employee inventions
• have arisen during the employment relationship from the activity incumbent upon the employee or
• are decisively based on DKFZ experience or work.
You can consult the Technology Transfer staff office at any time with all queries with regard to intellectual property. In general it can be said that you should contact the Technology Transfer staff office as soon as you are dealing with a technical development, which might have an economic potential, at any rate before talking about this development with outsiders such as colleagues from other institutes or company representatives. Often, the construction of a functional model or a prototype is helpful with regard to the use of an invention, sometimes even imperative. To file a patent application it is however sufficient to expound your ideas in a technically plausible manner.
Apart from trivial programs, software products are always the result of a creative, scientific, intellectual activity and therefore automatically subject to protection by the proprietary right. This copyright continues to exist until 70 years after the death of the author.
In addition, according to the assessment standards applied by national patent offices today, patent protection is also possible for software developments with a "technical character". By this is understood such computer programs that solve a technical problem or create an additional technical effect.
Before applying for a patent it should however be considered that many software products only have a life expectancy of a few years. Taking into consideration the cost of patenting and the patent offices' assessment periods that partly last for years it is therefore not always useful to strive for patent protection for software with a "technical character".
The inventor receives 30% of the net royalties (pro rata according to his/her share in the invention), the relevant DKFZ department 30%, and the DKFZ 40%. The net royalties are the gross royalties minus the cost
• of making the invention marketable,
• of managing the patent (patent lawyer) and license,
• of drafting the necessary contracts, negotiations,
• of the risks and guarantees.

Pursuant to the resolution of the Board of Trustees of July 1998, the DKFZ also remunerates inventors for the licensing or sale of technical know-how (software, biological material, plasmids, antibodies, etc.).
The DKFZ bases its remuneration of inventors on the model of the Max-Planck-Gesellschaft, but may deviate from this if the license is tied to a cooperation agreement.
As a further incentive to patent submission, inventors receive a lump sum of € 200 as an advance on the remuneration that will be due to them following publication of the patent application (i.e. after about 18 months as a rule). If there more than 5 inventors then the sum is smaller per inventor.

To be able to answer this question, two important points need to be clarified first. First of all it is decisive who your employer is and which tasks have been specified in your contract of employment or service. Secondly, it can as a rule be deduced from the grant regulations or a contract with the third-party providing the funds how to proceed in case of inventions.
For this reason, early handing in of an invention notification to the employer (not to the third-party providing the funds) is recommendable to clarify further steps that are required without delay.
Every employee is legally obligated to report his invention to his employer in writing without delay. The Technology Transfer staff office acts as representative of your employer, not the department or the professor in charge. The DKFZ needs to decide within four months after receipt of the notification whether it will release the invention or exploit it.
However, if the invention is exploited, the DKFZ is obligated to apply for a patent and to remunerate the inventor from the exploitation receipts. The inventor as such is always named, unless he renounces this right. No costs shall arise for him either from the application, the maintenance or the exploitation of the patent.
Of course the DKFZ takes into account all suggestions and relations the inventor contributes.
However, in general it holds that prior to applying for a patent or utility patent for an invention, as little information as possible should be given to potential customers at companies.
In addition, it is recommended to exercise utmost restraint when making promises vis-à-vis companies. Your interlocutor could later rightfully refer to that.

Invention Disclosure

As soon as you were able to demonstrate that your idea works in an experimental setting and before it has been published or publicly presented.
Within four months after receipt of the invention notification, the DKFZ needs to decide whether it will release or utilize the reported invention.
Already existing contractual obligations will be taken into account in this regard. If the notification has not been made within four months after receipt, the invention will automatically belong to DKFZ.
If the invention has been released, the inventor himself is entitled to apply for registration of a proprietary right and to exploit it.
If the invention is not released, the DKFZ is obligated to file a patent application at its own expense or exploit the invention in a different manner and to remunerate the inventor in the case of earnings resulting for instance from a licensing agreement.
After bringing in an invention disclosure we will evaluate the invention and respond within 4 month and let you know if we accept your invention and patent it. In case we reject it, you still have the possibility to patent the invention as a free inventor by yourself. Keep us informed, if you are planning to publish the results (First patent - then publish!)
Please hand in your invention disclosure at the TT-office of your employer and remember to name all contributing scientists and their affiliations. The institutes will inform each other about the invention. The idea will be evaluated by each party and in case a patent will be filed the institutions will jointly apply.

Invention assessment

Only a small percentage of inventions ever make profit. The costs for patent protection of inventions can be substantial. The probability and risk of spending money for patenting inventions that will never make it to the marketplace are high. For the DKFZ to recoup its investment, a technology must be of sufficient commercial interest for an industrial partner to be prepared to obtain a license for the technology and pay royalties for it.
If there is an interest in a license at the time of disclosure of the invention, for example through a collabo-ration agreement with an industrial partner, then the financial risk taken on by the DKFZ with a patent application is low. In this case, the Office of Technology Transfer will try to agree with the company that they pay the patenting costs, develop the technology further and bring it to the marketplace.
If no industrial partner has yet shown an interest in a license at the time of disclosure, the Technology Transfer Office will conduct an evaluation of the invention based on commercial criteria. The goal of the evaluation is to assess whether a licensee can be found within a reasonable time and/or what steps should be taken to increase the appeal of the technology for potential licensees.
• Market size/ Market potential. How big is the market for products or services based on the invention? Are there any competing products or services? How high are the expected revenues?
• Competitive advantage. What are the benefits and what is the value added resulting from the invention compared to competing products or processes already existing in the marketplace?
• State of development. How far is it from the invention to a product? Is there a proof of concept or a prototype?
• Sufficiency of patent protection. Is protection by a patent enough to secure the competitive advantage? Can patent protection easily be evaded? Is there a 'freedom to operate'?

This is not a complete list, it is merely intended to present an overview of key criteria. As a rule, it will take Technology Transfer four to six weeks to conduct such an evaluation, provided that no special circumstances arise. This evaluation will include a patent search and, if necessary, a consultation with an external expert. The evaluation criteria will be applied not only at the time of invention disclosure, but also during an ongoing patent granting procedure.

The Technology Transfer Office reports the evaluation outcome to the Management Board, which will then take the final decision. The evaluation outcome is not a statement about the quality of research, but merely about its marketability.
Typically, there are four possible outcomes:
1. Claim of the employee invention: Should the Management Board decide in favor of claiming the invention, the patent application process will be initiated. This means that Technology Transfer believes it can recoup the investment into patenting. However, later events or a lack of commercial interest can lead to the termination of a patenting procedure at a later date.

2. Release of an invention to the inventors: If the Office of Technology Transfer believes that it will not be able to find a licensee and thus to recoup the patenting costs, the invention is released to the inventors. In this case the inventors are free to file a patent application at their own expense and to exploit the invention. The DKFZ will not receive a share in potential revenues.

3. Holding back and waiting for further research data: Sometimes it is wise to disclose an invention at the time of "conception". However, a patent application will usually not be filed before the invention has actually been reduced to practice. This helps to avoid expenses for ideas that will not work. Moreover, it is often not possible to predict what critical details will facilitate actual reduction of an invention to practice and should therefore be included in a patent application to obtain good patent protection.

4. Testing the market: If it is hard to predict commercial interest in an invention, a sensible step to take before patenting can be to approach, together with the inventors, companies which might be interested in the invention. The companies would be committed to secrecy. If no interest is shown, the invention will be released.

 

Patents

A patent can be granted for any invention which is NEW (i.e. unpublished), NON-OBVIOUS (i.e. entailing more than just a combination of existing knowledge) and SOLVES A TECHNICAL PROBLEM.
Highly interesting and patentable inventions are made especially in biological science. Because according to the definition, an invention is a "theory for methodical action making use of controllable natural energies to achieve a causally clear success", inventions in the area of biological science could also be covered by this definition.
The realization that a certain, hitherto unknown gene exists in the genome is a non-patentable discovery. However, if a patent for a procedure to isolate or use DNA-sequences or partial sequences is applied for, patenting is possible, provided an exact description of the function is available and the procedure is commercially applicable. Whether the guidelines specified for this by the patent offices have been met needs to be checked in detail for every invention.
Patent cost rise with time. Over the first years only minimal fees have to be paid. By the time costs rise with every country you decide to keep your invention protected. From about 5.000€ within the first years, costs may rise to x times 20.000€ p.a.
If you have made an invention, you have to report it to the Technology Transfer Office as the department dealing with inventions. Technology Transfer will evaluate the invention based on patent law and commercial criteria. On the basis of this evaluation, the DKFZ will decide whether it will claim the invention or release it to the inventors. The steps from Invention Disclosure to a patent are:
1. Filing a Patent Application
If the DKFZ has claimed an invention, a patent application will usually be filed. The patent application will be drafted by an external patent attorney. You will be requested to contribute to this process by providing the attorney with your results and your expertise. The attorney will file the patent application in the name of the DKFZ, as a rule, with the European Patent Office (EPO) to start with. The costs are borne by the DKFZ.
2. Patent Granting Procedure
After a patent application has been filed, the patent office will examine the prior art and then review the invention using specific criteria (novelty, inventiveness, susceptibility to industrial application, clarity, feasibility and sufficient disclosure) to determine its patentability. A patent will eventually be granted only to the extent to which these criteria are fulfilled (often after 5 years or more since original priority filing).
Following the first filing with the EPO, the DKFZ will usually also file an international (PCT) application and national applications resulting from it, such as in the US, Europe, China or Japan.
3. Decision on Patent Maintenance
Since patent application and maintenance are expensive, there are regular reviews to determine whether it still makes sense to carry on with these. Important cost-relevant milestones of a patent granting procedure are 12 and 30 months after filing.
For a period of up to 12 months after a first filing that has given rise to a right of priority (usually a European filing) it is possible to supply further unpublished data and to file patent applications for the same invention in other countries. Since the value of an invention is frequently still unclear after one year, it is possible to delay this decision by 18 months by filing an international patent application under PCT (PCT filing).
In the first twelve months before an international (PCT) patent application is filed, it is possible to make additions and changes to the patent application. During this time, new results supporting the invention can still be inserted into the patent application. Therefore, it is important to coordinate with Technology Transfer all publications about the invention during this first year.
The European Patent Office's assessment practice distinguishes between software "as such" for which it is not possible to obtain patent protection, and software with a "technical character". A software is of technical character if
1) the software itself solves a technical problem (for example control and regulation systems) or
2) an additional technical effect is generated when the software is executed, physical changes to the hardware such as they occur during every software execution not being sufficient. Assuming the novelty and merit of invention criterion has been met; most patent offices recognize such software as patentable that has for instance one of the following additional technical effects:
• faster execution times,
• increased data transfer rates,
• more effective data storage,
• higher resolution, for instance in high image processing,
• simplified manipulation of computer graphics,
• more effective data compression,
• higher effectiveness of a data filter.

Even though software may be patentable is not always the best commercialization route.

Searching patents – Beneficial for science

Using all the available sources of information is a key factor in remaining at the cutting edge of research in today's high-powered world of science. Do you want to know whether your research results are novel and perhaps patentable as well? Or whether a colleague from a competing study group has patented his results?
Searches in scientific databases are, of course, essential. But: did you know that many results from industry can often be found only in patent databases, because patent applications across the world have to be published by the relevant patent offices? Unfortunately, these valuable sources of information are still used all too rarely by academic researchers.
The portal SciFinder (accessed via the Library website) offers a search facility for all DKFZ researchers. SciFinder can be used to find publications from over 10,000 journals and patents from 63 patent offices. If you discover during a search that you have found a new solution to a technical problem, this probably involves an invention, in which case please report this to the Office of Technology Transfer.
Apart from the aspect of novelty, one important feature of an invention is that it should stand out from the "state of the art". The state of the art refers to the technical possibilities at a particular point in time, based on definite scientific and technological evidence. An invention is considered to exist if, compared to the state of the art, it is not obvious to a person skilled in the art. This is known as the "inventive step".
Searches aimed at establishing the novelty and the state of the art always involve the searching of patent and the non-patent literature. These are combined to produce complex search operations, each of which should consider the following periods:
  • the state of the art (5-10 years retrospectively)
  • novelty search (unlimited retrospectively)
Patents, just as publications in specialist journals, provide insights into the scientific environment of your area of work/interest. The information content of both forms of publication is equal and there is often no overlap of information. The difference between patents and scientific publications is their purpose: Patents pursue an economic purpose.
The Office of Technology Transfer regularly conducts patent searches and offers trainings . Seminars for individual departments are available on request.
Almost every national patent office offers its own database on the internet. These are usually free of charge, open to the public and accessible by anyone without registration. Below is a list of the principal patent offices and their search databases, together with the addresses of the WIPO (IP agency of the United Nations), Google Patents, FPO, SciFinder and PatSnap.
The DKFZ offers access to the SciFinder database, and you can find information about the access options on the Library website of the Intranet. Introductory events are offered at regular intervals by the central library.

Invention/patent protection

All kinds of sharing of information that is not protected by a Non-Disclosure Agreement.
e.g. posters, emails, ordering sheets for Materials, etc.
In order not to jeopardize an invention, the patent application is drafted in parallel to the preparation of the manuscript for publication in a scientific journal. Both documents are then submitted simultaneously: the patent to the patent office and the manuscript to the publisher. The same procedure is applied for abstracts, discussion papers, posters, and presentations. Not all inventions by the German Cancer Research Center are patented. Many new developments such as cell lines, antibodies, mouse models, and software can nevertheless be licensed.
In Germany, as in most countries, a patent is only granted for inventions that are "new", i.e. that have not yet been made public either in written or verbal form. A so-called "novelty grace period", where the inventor's publications are left out of consideration, does not exist in Germany. Only in the case of utility patents, own publications within the last six months are left out of consideration. In the USA, the novelty grace period for a patent application is one year.
A prior publication at any rate considerably restricts the chances for a comprehensive patent protection.
The decisive date of a publication from a patent right point of view is the date of publication of the magazine and not the date your article was submitted. If it is taken into account that as a rule, several months will pass from the date of submission of an article to its publication, it becomes clear that a patent application will not necessarily cause a delay in publication.
However, to avoid information from becoming public during the assessment period, the patent application should first be lodged with the patent office and only then should the article concerned be handed in to the magazine.
Please note that you have to report the publication of an invention to the DKFZ, if no patent has as yet been applied for. As a rule, publication may be affected after a period of two months.
"Public" means that a group of persons that can no longer be clearly delimited has access to the relevant information. Colleagues working on the same project surely do not belong to this definition. However, you should always consider to what extent your colleagues have contributed to the invention and therefore need to be named as inventors.
University dissertations, dissertations that have been submitted for a diploma or PhD theses that are available to the public to look at, are detrimental to the novelty criterion. The paper in question must be kept under lock and key at least until the patent is applied for and possible readers of the paper must be committed to secrecy. Normally, in consultation with the faculty and/or the university library, the bestowal of a doctor's degree is however not delayed.

Starting a business

Upon request you can run a research project under the general terms and conditions of DKFZ. The costs of your service will be calculated and invoiced. You cannot run a business in house.
We and the Grants Department support you in finding the best funding for you project. Especially for the validation period of an idea the VIP+ funding is a successful model to transfer an idea into a marketable product.
It is not possible to stay within DKFZ with your business, but we support your soft exit. This means that
There are many local and national options (e.g. EXIST, VC funds etc. ). Some our public, other private. Please talk the Heidelberg Startup Partners to get the most up-to-date information – it is a free service.
No. Bu there is a couple of trainings you can take to qualify you for the job. Based on an education in life sciences you can take courses e.g. in patent law, licensing and marketing.
Marketing serves to make known inventions and technologies of the DKFZ as well as technology transfer activities. Through marketing, the DKFZ attracts the attention of industrial partners, albeit only few li-cense partners are identified in this way. The Office of Technology Transfer markets patented and non-patented technologies such as materials and software. All technologies developed at the DKFZ that are not bound by collaboration agreements with industrial partners are offered to as many companies as possible.
The three principal ways of establishing contacts with potential licensees are:
• The DKFZ's Office of Technology Transfer approaches companies that might be interested in the technology.
• Potentially interested companies directly approach the DKFZ.
• Personal contacts in which the inventors describe or present their work.
A 'technology abstract' or non-confidential summary is a marketing document designed to stir the interest of commercial partners in an invention. A technology abstract should contain enough information for the company to get an idea of the technology, state of development, and application(s). Such a non-confidential disclosure comprises:

• A summary of the technology developed which emphasizes the results achieved without ex-plaining how they are achieved.
• The present state of the art of competing technologies available in the marketplace and their limitations.
• Arguments why the new technology is superior and helps the licensee achieve a competitive advantage.

This description should identify all possible specific uses of the technology. These may be individual areas of use of the technology for which separate licenses may be possible (e.g. different disease indications or markets such as diagnostics or therapy). The abstract can also state what the DKFZ is looking for, such as licensees and/or collaboration partners, animal models, etc.
It is helpful if the inventor contributes actively to generating a non-confidential technology abstract. If necessary, however, the Office will produce an abstract based on the invention disclosure or the patent application, respectively.
The Technology Abstract will be provided to industrial companies that are supposed or known to have an interest in the field of the invention.

Companies showing an interest will usually be requested to sign a confidentiality agreement. They will then receive further information such as patent applications and research results. At this point companies generally wish to talk to the inventor. If these talks are positive, Technology Transfer will take up licensing negotiations with the company.

Material Transfer Agreements

An MTA is an agreement on the transfer of biological material (antibodies, cell lines, mouse lines, etc.) for research purposes (but not for commercial purposes!).
An MTA must be concluded whenever biological material is to be transferred for research purposes.
Since biological material may have considerable commercial value, it is important that this material not be handed over to third parties with no strings attached.
Is the material human derived (e.g. cell lines, samples)?
Who is the recipient?
What may the recipient do with the material?
What is the legal position concerning ownership?
Who is liable for damages?
What is the procedure for publications and inventions?
Who in the DKFZ is authorized to send material?
The German Cancer Research Center (DKFZ) is a contractual partner in all cases and may act as the party either giving or receiving the material.
First, you yourself have to ascertain whether you are authorized to transfer the material or not.
You are authorized to transfer material to non-commercial institutions if:
• you have developed the material yourself at the DKFZ and it is
• biological material WITHOUT any genetic modification
• genetically modified biological material classified as biosafety level 1
• genetically modified biological material containing Tet technology
• in case of human material, data protection approval has been obtained in advance.

You may not, however, transfer the material if you have received it from a third party or if the material contains third-party IP (please contact your licensing manager for more information).

To enable you to send your material quickly and unbureaucratically in such cases, we have uploaded for you all the necessary documents and information on the DKFZ Intranet.

Please note that for human materials (both sending and receiving) the approval process involves the DKFZ Data Protection Department. This applies to patient-derived cell lines, any human samples, DNA/RNA, xenograft models etc. Please hand in the Informed Consent Forms (ICF) for approval together with the appropriate MTA form.

Please download the relevant MTA form from the Download area, complete the form, and send it with a request for signature to the recipient. As soon as the MTA has been returned to you with the necessary signature (the electronic form is sufficient), you may send the material to the recipient.

If you wish to send other material than that mentioned above, please contact the licensing manager responsible for your group

Before any transfer of material to a private company is made, please contact the licensing manager responsible for your group, because MTAs of this kind are negotiated individually. As a general rule, a license agreement has to be signed in such cases.
Send the MTA that you have received from the third party to the Office of Technology Transfer to the licensing manager responsible for your group. This is essential because many third-party MTAs contain clauses that considerably curtail your rights with regard to publications or inventions that you have made with the material. The Office of Technology Transfer therefore studies such MTAs in detail and negotiates better conditions wherever possible.
Please get in touch with the Office of Technology Transfer, to the licensing manager responsible for your group because MTAs of this kind are negotiated individually. As a general rule, a license agreement has to be signed in such cases.
• If the material is patented
• If you wish to obtain material from third parties (academic institutions or companies)
• If you wish to send material to a company
• If you wish to send material containing third-party material
• If the material was produced in cooperation with third parties
• If you wish to send GMOs and/or pathogens classified as biosafety level 2 and higher, contact biosafety@dkfz-heidelberg.de 
• If the recipient wishes amendments to the MTA
• If you wish to send material containing Cre-ERT constructs
• If you wish to send or obtain human material (contact Data Protection department datenschutz@dkfz-heidelberg.de 
By signing the MTA, the recipient undertakes as a general rule not to transfer the material received to third parties. This also applies to material from third parties that has been incorporated into material developed by you, e.g. DNA constructs in the production of transgenic mouse lines. If you wish to transfer such material, you must obtain permission from the donor of the material you have incorporated. We will take care of this. Please get in touch directly with the licensing manager responsible for your group in the Office of Technology Transfer.
In the MTA forms that are available on the DKFZ Intranet, the marked areas require additional information from you and from the recipient of the material . Please carefully complete the requested data that concerns you. In this way we can ensure that a legally binding contract is produced. Special remarks on completing the following points:
Original Material: Please use a readily understandable name for the material that adequately defines the material. In many cases, the material is not adequately described by the name alone and thus requires a brief description (what? plasmid, antibody, hybridoma, etc.; origin of sequences? human, murine, etc.) or a reference that describes the material. If the material has been patented, this must be stated.
Purpose: The purpose for which the recipient is receiving the material is defined here. You may narrow down the research field as much as you like. The advantage is that the recipient may then not engage in parallel research using your material.
Please send the MTA in electronic form to the recipient of the material.
If the recipient is in agreement with the content of the MTA, they should complete the MTA, print it out and sign it and then return it to you and to MTA@dkfz.de . In case of MTA_GMOs or MTA_GMO_TET please also send the MTA to biosafety@dkfz-heidelberg.de .
If the recipient wishes any changes to the MTA, please contact the licensing manager responsible for your group in the Office of Technology Transfer LINK. Do not send the material until you have received the signed MTA from the recipient.
Only a person with signatory rights at the DKFZ can sign an MTA so that it is legally binding. It is normally a person such as Head of the Office of Technology Transfer. The scientists themselves do not have the signatory rights for DKFZ.

Collaboration with Industry

Collaborations with industry are project-related co-operations over a limited period of time. Their advantage is that accounting is not calendar-related and, thus, they supplement the department's current funding. Another advantage that is gaining increasing importance for DKFZ investigators is that industry contacts provide access to large appliances, prototypes and other methods (such as high-throughput screening). Each collaboration requires a separate agreement that needs to be tailored to the individual project.
Industry identifies interesting projects, for example at exhibitions (our tip: collect their business cards) and conferences or as calls and scouting efforts. Information about companies is also available at the Office of Technology Transfer. Suggestion: To identify new projects it can be useful to review not only scientific publications but also existing patents (reflect future focus) of companies.
Following initial talks with industry, you will first have to provide a rough draft of a working concept/plan , which will then be discussed with the industrial partner. It comprises first cornerstones of the collaboration such as duration, milestones, goal, staff, material resources, travel expenses, etc. Please get your licensing manager at Technology Transfer involved before sending off a working concept. At this stage it is important to refrain from mentioning or negotiating concrete monetary figures.
You should contact the Technology Transfer Office staff with a draft and discuss the cornerstones and milestones of a prospective agreement in more detail with the responsible technology manager.
In a joint meeting (including the Finance Department, if necessary), further key data are clarified. (Does the financial frame of the company correspond to the working package of the DKFZ? Is the timeframe realistic?)
The Office of Technology Transfer coordinates the collection of information required, negotiates with the company and prepares all contract drafts through to the last valid version. The Finance Department will help with the financial calculation. We need you to provide a detailed project description including time line (rule of thumb: to allow for unexpected delays, the working package must be feasible in less than duration time (90%)). Depending on the circumstances, this outline will be part of the contract, usually as an appendix. In most cases, Technology Transfer will be able to negotiate the wording of the contract and finances.
Technology Transfer will finalize the contract in coordination with all parties involved (investigators, Project Department, company). Subsequently, the final version will be signed by the Members of the Management Board. By your signature you agree to the whole project and the individual legal provisions (duty to report publications, secrecy, final report, etc.)
The Finance Department will keep your collaboration project under a project number corresponding to the one assigned by Technology Transfer. Your contact person at the Finance Department will tell you the current state of the account and will help you with any questions you may have.
If a collaboration has started and it turns out that something is not going according to plan (company does not pay; does not supply material; a milestone is delayed; etc.), please notify your contact person at the Technology Transfer Office immediately. Only if we have your feedback can we provide support by intervening and, if necessary, adjusting the agreement.

License Agreements

License agreements can be the cornerstones of relationships between science and industry. A license agreement is a contract in which the holder of a right of use (patent, trademark, copyright) transfers this right totally or in part to another party.
In scientific technology transfer, a license agreement is often an agreement concerning patent rights owned by a scientific institution. The right derived from a patent is called a "negative" right, i.e. rather than allowing practical application or use of an invention, it entitles its holder to forbid others the practical application of a patented invention. In a license agreement, the patent holder grants the licensee (company) the right of practical application of an invention in a certain area. Licensing does not transfer property rights.
License agreements can also cover materials (such as transgenic mice and cell lines – see Material Transfer Agreements) and other forms of intellectual property including copyrights (particularly on software).
After a company has first shown an interest in obtaining a license, Technology Transfer staff will produce an outline of the key licensing terms and conditions. In the process, the responsible technology manager will consult the inventor(s) in all questions concerning the invention. After reaching an agreement about the license terms, the DKFZ and the company will negotiate the complete license agreement.
License agreements stipulate:
• the invention under license (subject matter of the license)
• the application area in which the licensee is entitled to utilize the license (e.g. therapeutic or diagnostic purposes)
• the geographical area in which the company is entitled to utilize or sell the invention
• the term of the license
• the proper performance of the contract by the company
• the financial terms of the license including possible upfront payments, minimum annual payments, and milestone payments as well as continuous payment of license fees for products sold
• the course of action in case of infringement of patent rights
• the release from liability of the DKFZ that may arise from utilization or sale of the invention by the company
• accounting and auditing provisions
• mode and time of possible cancellation of license contract by the parties
• all confidentiality conditions.
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